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THE AMERICAN SPECIFICATION 
IN EUROPE 



A DISCUSSION OF FOREIGN 
PATENT OFFICE AND COURT 
PRACTICE WITH PARTICULAR 
REFERENCE TO THE INTERPRE- 
TATION OF SPECIFICATIONS 
AND CLAIMS IN GREAT 
BRITAIN AND GERMANY 



By 

LAWRENCE LANGNER 



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INTRODUCTORY REMARKS. 

Attorneys in tMs country are not generally 
aware of the legal complications arising from the 
use of the American type of specification in the 
foreign practice. In the paper which follows, I 
have set forth a few suggestions with a view to 
modifying the present style of writing specifica- 
tions for the United States Patent Office, which 
suggestions, if adopted by United States Attorneys, 
will be the means of simplifying the prosecution of 
foreign patent applications to a considerable ex- 
tent, and this without prejudice to the practice in 
the United States. In other words, I have en- 
deavored to define a middle course between the 
United States practice and the European practice 
which will operate to the advantage of both and 
without sacrifice to either. 

The industrial trend of the United States at the 
present time is towards international business, as 
evidenced by the constantly increasing number of 
American corporations established in Europe, and 
attorneys in this country find it continually neces- 
sary to give to the prosecution of foreign patent ap- 
plications the same careful attention accorded to 
United States applications. I believe that the gen- 
eral adoption of my suggestions may be of material 
assistance in this direction. 

I have pleasure in thanking my associates, Mr. A. 
E. White, A. I. M. E., of London, and Patentanwalt 
Georg Benjamin, of Berlin, for their valuable assis- 
tance and suggestions. 

Lawrence Langner. 
149 Broadway, 

New York City. 

September 1st, 1913. 



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THE AMEKICAN SPECIFICATIOl^ IN 
EUEOPE. 

Tlie results of attempts on tlie part of American 
inventors to secure adequate protection abroad, and 
particularly in Germany, has often given rise to 
speculation in tlie past as to whether or not there 
is a prejudice in Europe against inventions emanat- 
ing from the United States. If prejudice exists at 
all, it is certainly not directed against American 
inventions, but it may be said with a great deal of 
truth that there is a strong prejudice in Europe 
against the American form of specification, and this 
fact is not as generally known and thoroughly ap- 
preciated as it ought to be in the interests of Amer- 
ican inventors. 

The responsibility for the prejudice against the 
American specification in Europe rests directly 
with the American attorney. He may employ the 
best foreign patent agents — he may give the fullest 
scope for individual attention to his cases — and yet 
he may be unsuccessful in securing foreign patents, 
or patents of the desired ambit. To enter the 
foreign field upon a proper basis, the American at- 
torney must consider the foreign situation at the 
time of filing each U. S. application, and he must 
at that time give the same careful consideration to 
the foreign practice as he does to the domestic. Un- 
til this fact is realized — until there is an end to the 
practice of blindly prosecuting the U. S. applica- 
tion to allowance, and then rushing at a right angle 
into the foreign field — ^American attorneys may con- 



tinue to expect trouble with their foreign applica- 
tions. 

It is generally recognized that when the foreign 
claims are in so-called American form, a foreign 
patent, if one be obtained at all, is in more or less of 
a hopeless condition — almost as hopeless as a U. S. 
patent with the English or German form of 
claims, were it possible to obtain one. This has led 
to the practice of turning over the preparation of 
the foreign claims to the foreign patent agent, and 
in this way all difficulties are apparently removed. 
Only apparently, however, for experience has shown 
that the real difficulties are not removed, but 
cloaked. And the inherent difference between the 
foreign practice and the IT. S. practice is responsible 
for the fact that foreign claims tacked on to an 
American specification very often mean something 
quite different from what they say. 

The line of demarcation between the specification 
and the claims which exists in the United States 
practice, is very faint in Europe. In some coun- 
tries, such as France, the claims are frankly regard- 
ed as unnecessary. In other countries, such as 
England and Germany, they are merely a matter 
of form. A British patent with a claim for "The 
invention substantially as described in the specifica- 
tion" may be a perfectly good patent, and moreover 
a very broad patent, if the invention is broadly 
described. One of the functions of the foreign spec- 
ification is to claim, and not only to claim, but to 
modify the claims. In other words, the foreign 
specification and claims are an integral whole ; they 
must be read together and construed together. A 
narrow specification and a broad claim may give 



only narrow protection. A broad specification and 
a narrow claim may sometimes give broad protec- 
tion. The claims of an American specification play 
the leading part, and even the most conscientious 
of American attorneys, misled by the importance of 
U. S. claims, are inclined to think that so long as 
the foreign claims are broad, the specification is a 
matter of secondary consideration. 

THE TYPICAL AMERICAN SPECIFICATION. 

In order to arrive at an understanding as to 
what must be done by the American attorney to 
co-operate with the foreign patent agent in secur- 
ing foreign claims, which, when construed as a 
whole with the specification, Avill be of the desired 
scope, it is necessary first to enquire into the trouble 
arising from an American specification having 
foreign appendages in the way of claims. The ma- 
jority of U. S. attorneys regard the specification as 
a vehicle of disclosure, and moreover a disclosure of 
no more and no less than will support the claims. 
The best form of United States specification, follow- 
ing this rule, is that which closely describes the em- 
bodiment of the invention illustrated in the draw- 
ing, and upon which all the claims, broad and nar- 
row, can be read ; most American specifications com- 
mence with a brief statement of the art to which 
the invention relates, followed by a statement of the 
objects of the invention, a broad description of a 
preferred embodiment, and a specific description 
of this embodiment, which is illustrated in the 
drawings. Usually no attempt is made to dissociate 
the invention from its embodiment, and by 
"invention" here is meant the European conception 



of iuvention — the conception that an invention is 
sometMng quite distinct from its visible embodi- 
ment. It is important to realize very clearly just 
wliat this conception is, for reasons which will ap- 
pear hereafter. A British case, the British Muto- 
scope Co. V. Homer (1901), 18 K. P. C, 177, is a 
good illustration of this conception. In this case 
certain patented mutoscopes were seized under dis- 
tress from a personal licensee and sold, but the 
persons who acquired the articles by this sale were 
unable to use them, for although they were the 
owners of the material of which the mutoscopes 
were made, yet the inventive idea embodied in the 
operative apparatus was the property of the pat- 
entee. The entire European practice is based upon 
this conception of invention — that an invention is 
an idea, and can be embodied in any number of 
forms irrespective of the number of elements or con- 
structional features. 

To return to the U. S. specification under discus- 
sion : It is very rarely the case that any statement 
based upon such a conception of invention appears 
in the specification. In fact, as a general rule, the 
specification is a faithful description of the illus- 
tration, and it is only when the claims are con- 
sidered that the real invention becomes apparent, 
or rather should become apparent. Such a specifi- 
cation, limited to a description of a single species 
to avoid a call for division, may be regarded as be- 
ing substantially typical of a carefully drawn U. S. 
specification, the attorney having given all his at- 
tention to the requirements of the U. S. practice 
alone, although in eight cases out of ten, when an 
important invention is concerned, he knows full 



well that foreign patents will also be required at 
some subsequent time. 

Let us assume tbat specifications, such, as that 
outlined above, are mailed with the drawings to 
patent agents in England, France and Germany, 
with instructions to prepare the claims in accord- 
ance with the preferred foreign practice. The 
foreign patent agent, if he be at all conscientious, 
will not attempt to frame the foreign claims for an 
important invention merely by construing a number 
of U. S. claims, for even the U. S. attorney himself 
knows little of the mysteries he has hidden in the 
carefully formulated sequence of words which de- 
fine the scope of the invention according to Amer- 
ican practice. Usually the U. S. attorney is re- 
quested to write a statement setting forth the gist 
of the invention, and this statement accompanies 
the application documents. With an understanding 
of the invention based upon this information, the 
foreign patent agent prepares the foreign claims. 
THE GERMAN PATENT OFFICE PRACTICE. 
Following the specification addressed to the Ger- 
man attorney, we generally find that some time is 
occupied in limiting the claims to a single inven- 
tion; this happens in a great proportion of cases, 
owing to the fact that while any number of species 
may be claimed in a single German application, pro- 
vided that they are all connected by and embody 
the same novel and patentable inventive idea, yet 
features which form part of the same machine or 
process but are functionally inter-related with, 
and developments of, the main inventive idea, can- 
not be included in a single application. This is 
almost the opposite of the American practice. Af- 



ter tlie objections of the German patent office have 
been met in this respect, we may expect to receive 
an action from the German Examiner citing a few 
wholly irrelevant references, and stating that a pat- 
ent cannot be granted for want of patentability, 
as it cannot be seen that any new technical effect 
is produced by the alleged invention. And notwith- 
standing the fact that a new technical effect is 
actually produced, it is not a matter for wonder 
that the German Examiner does not see it. The 
typical American specification may be an excellent 
description of a machine, for instance, but it cer- 
tainly is not a description of an inventive concep- 
tion invohdng a novel technical effect : It was never 
intended as such. In haste, the U. S. attorney 
writes a vivid statement of the advantages of the 
invention over the prior art. The German agent 
files this in the form of an argument in the German 
Patent Office. The examiner may then recognize 
that patentability exists. He may also — in a spirit 
of unwelcome generosity — propose a claim includ- 
ing most of the elements of the embodiment shown 
in the drawing. The U. S. attorney vigorously pro- 
tests against this claim, often thinking it more re- 
stricted than it really is. The examiner, in reply 
to a request from the agent for the allowance of a 
broader claim, will reply that the broader claim 
merely represents a problem which is solved by the 
construction shown, and that as the invention con- 
sists in the construction which solves the problem, 
only a claim on the construction can be allowed. 
Almost in despair, the U. S. attorney shows that 
other constructions or modifications, not included 
in the wording of the claim proposed by the ex- 



aminer, could also produce the same new teclinical 
effect, and that for this reason a broader claim 
should be allowed. The examiner replies that no 
such other constructions or modifications were de- 
scribed in the specification and that he can only- 
take into consideration what was contained in the 
specification at the time of filing. He will probably 
also remark that the applicant is trying to cover 
every way of solving the problem, whether known 
or unknown. In many cases where the examiner 
does not himself propose a claim, he will object to 
a broad claim submitted by the applicant for the 
reasons set forth above. In fact, it may be stated 
as a general rule that where only one embodiment 
of the invention is described, the examiner will 
object to allowing a claim on the broad principle 
and a claim on the specific form ( 1004, p. 329 Bl Ig- 
nition pellet case ) . An appeal is filed, which may 
or may not be successful — success depending upon 
whether the Appeal Board decides that the inventor 
really has invented more than is described in the 
American specification. As such a decision must be 
based upon a benevolent, and even strained, con- 
struction of the specification, rather than upon the 
facts, it is hardly to be expected that in every case 
the Appeal Board will grant claims of the desired 
breadth of wording. Moreover, it is becoming in- 
creasingly difficult to secure the allowance of broad 
claims in Germany, not only because the responsi- 
bility for granting such claims rests very heavily 
upon the German Patent Office, and may be the 
cause of recrimination at a later date but also be- 
cause the Courts have made it clear that the Patent 
Oflftce has performed its duty if the claims allowed 



clearly characterize the subject-matter of the inven- 
tion, the scope of the claims being a matter for the 
Courts to decide ( Sup. Court, Bl. 1910, p 157 Coke 
chute case) . In other words, to be on the safe side, 
the German examiner adopts the attitude that the 
claim shall cover only the invention described, and 
he jealously resents any attempt to claim the inven- 
tion in such manner as to include every possible in- 
fringement by the wording of the claim. This atti- 
tude of the German Patent Office is due to the pres- 
ent peculiar practice of the German Courts in re- 
gard to the interpretation of claims, and it is not 
a digression from the present subject to describe 
this practice of the German Courts, as the relation 
of the typical American specification to this prac- 
tice will then be better understood. 

THE GERMAN COURT PRACTICE. 

The claims of a United States patent may be 
likened theoretically to the walls which enclose the 
monopoly area: these walls are rigid — on one side 
of them any member of the public is free to do as he 
pleases, and on the other side he stands within the 
monopoly area. The claims of a German patent — 
and to a lesser extent the claims of a British pat- 
ent — are elastic. They stretch and contract accord- 
ing to a variety of circumstances, such as the state 
of the art and the merits of the invention. They 
may mean ever so much more than they say, or ever 
so much less, depending upon the particular cir- 
cumstances involved. The German Courts have 
adopted the attitude, which is undoubtedly a rea- 
sonable one, that the inventor cannot at the time 
of making his application, or even at a later date, 



be expected to know every possible way whereby 
bis patent can be infringed, and that it is an impos- 
sible task to attempt to frame a claim worded in 
such a way as to cover all possible infringements, 
known or unknown. United States attorneys are 
supposed to be able to draft such claims, but the 
cumbersome methods necessary to achieve success 
do not recommend themselves to the foreign prac- 
tice. So the German Courts, recognizing that 
claims are but poor weak instruments, step in and 
give them a helping hand by way of benevolent con- 
struction whenever it is possible to do so. And to 
assist in gi^dng this construction, the Courts must 
be able to find a logical basis for an otherwise sen- 
timental decision in favor of the patentee. This 
basis can generally be found in a foreign specifica- 
tion scientifically drafted Avith the foreign practice 
in view, but is more often missing than not in the 
typical American specification. The basis for a 
broad interpretation of a narrow claim, apart from 
the state of the art, is the tone of the specification 
as much as its wording. A dominating note of 
breadth should be present, evidenced by a broad 
statement of the inventive idea from varied aspects, 
and the inclusion of a description of a number of 
embodiments or species. Assuming a meritorious 
invention, and an infringer who skilfully avoids the 
wording of the claims, the Courts will pounce upon 
such broad statements in the specification and will 
interpret the claims in view of them. One is al- 
most tempted to say generally of the German prac- 
tice, that if the attorney takes care of the specifica- 
tion, the claims will take care of themselves. But 
this is perhaps going too far. If an invention is dis- 

10 



closed, but not claimed, it will be very difficult to 
bring it within the monopoly area by "construc- 
tion." 

All this presupposes that the Judge deciding a 
patent suit shall have a broad understanding, not 
only of the technical matters involved, but also of 
the legal principles laid down by the German de- 
cisions as to construction or interpretation. But 
German judges are only a little more nearly in- 
fallible than the judges of other countries — it is 
neither safe nor wise to leave too much to their 
imagination. It may be stated, as the safest rule, 
that, as in America, the broader the claim the better 
the patent, provided that the claim is not too broad. 
But the German examiners, wishing to avoid the 
responsibility of granting broad claims, are gener- 
ally only willing to allow claims as limited as pos- 
sible having regard to the disclosure, leaving it to 
the Courts to give the limited claims a broad con- 
struction if they are entitled to such construction. 

Without question, it is in the best interests of the 
patentee to secure the broadest possible claims from 
the German Patent Office, and the American spec- 
ification is a decidedly unsatisfactory medium for 
accomplishing successful results in this direction. 
To secure broad claims, we must be able to show 
the examiner, from the specification itself, that the 
invention is capable of embodiment in a variety of 
forms, and that any claim which does not read on 
each or all of these embodiments is too narrow, 
ha\4ng regard to the disclosure. In this way, argu- 
ments can be based upon the fact that a narrow 
claim does not cover all the aspects of the inven- 
tion disclosed, and such arguments are usually suc- 
cessful. 

11 



Having summarized tlie troubles caused by the 
American specification in Germany, we may deal 
with the situation in Great Britain wbere condi- 
tions are not quite so difficult. 

THE PRACTICE IN GREAT BRITAIN. 

The British patent system, so far as the inter- 
pretation of specifications and claims is concerned, 
may be regarded as a compromise between the 
United States and German practice, with leanings 
towards the latter. The equity rather than the let- 
ter of the claims is observed by the Courts, and the 
construction of the claims is dependent upon the 
specification to a marked extent in case of doubt. 
It may be said that every part of the English specifi- 
cation and claims has a relative meaning, depending 
upon the meaning of every other part of the spec- 
ification and claims. The British patent office does 
not object to an attempt to define the scope of pro- 
tection by the claims, so long as the formal rules as 
to multiplicity of claims are observed, and it is not 
at all safe to expect the British courts to give a 
claim a broad construction when it is worded nar- 
rowly. In this respect the practice more closely 
approximates that of the United States than the 
German practice. Thus in the case of Nobel's Ex- 
plosives Co., Ltd., V. Anderson (1894, 11 R. P. C, 
128) the judge stated that ''in order to make out an 
infringement it must be established that the alleged 
infringer is taking the invention claimed by the pat- 
entee, not the invention which he might have 
claimed if he had been well advised or bolder." The 
British courts, in interpreting the claims, can only 
stretch them in case of doubt as to their meaning. 

12 



If it is clear that the claims are limited, then they 
will not be interpreted broadly simply because the 
patentee has elected to make a present of the broad 
aspect of his invention to the public. To avoid 
danger of adverse construction of his claims by the 
Courts, the skilful British patent attorney attempts 
to pad out the specification with statements which 
can be read in two ways, both broadly and narrow- 
ly, and these statements are used to confuse the 
judge should the patent be litigated. Immediately 
the question of doubt arises, the rule of benevolent 
construction is applied to the claims, this rule being 
that where two or more constructions are equally 
tenable, the court will adopt the one which will give 
validity to the patent (Automatic Weighing Ma- 
chine Co. V. Knight, 1889, 6 R. P. C, 307). While 
the typical American specification, when appearing 
before the British Courts, has been known to con- 
fuse by its terminological complexities, the con- 
fusion is not in the right direction when it does not 
lie in the statement of the nature of the invention. 
(At this point, anticipating criticism of my views 
as to causing 'confusion," I know that it is fash- 
ionable for writers on British Patent Law to ad- 
vise that the specification and claims should be as 
clear "as possible." It is just the difference be- 
tween what is possible and what is not. The Ger- 
man Courts recognize that it is not possible for the 
claims to include in terms every infringing device, 
and they go outside the claims and look at the in- 
vention itself. Until the British Courts frankly 
adopt this attitude, towards which they have lean- 
ings only, it will always be necessary to take advan- 
tage of the rule of benevolent construction.) Ac- 

13 



cording to Sec. 2 of the British Patents Act of 1907, 
there must be included in every specification a 
statement of the nature of the invention, and by 
"nature of the invention," according to the British 
use of this term, is meant the inventive idea apart 
from its visible embodiment. Unfortunately, the 
laxity of the British Patent Office is such that pat- 
ents are often issued with narrow statements of the 
nature of the invention, and broad claims. Where 
the specification is narrow, and the judge has to in- 
terpret the broad claims by the narrow specifica- 
tion, there is a danger that the claims will be con- 
strued more narrowly than was intended, and this 
is a danger to which American specifications are 
particularly susceptible. 

GREAT BRITAIN AND THE INTERNA- 
TIONAL CONVENTION. 

The difficulties caused by the American specifica- 
tion in Great Britain are aggravated if the applica- 
tion is filed under the provisions of the Interna- 
tional Convention, and in view of the practice dat- 
ing from medieval times and existing in England 
at the present day — the practice of granting the 
patent to the first rogue who may bring the inven- 
tion into the country, irrespective of how he ac- 
quired it — most United States attorneys now make 
it a rule to file under the Convention, so that the 
conditions hereinafter mentioned are read and re- 
current ones. 

The interpretation placed by Great Britain upon 
the International Convention, involving as it does 
the antedating of the British patent to the date of 
the first foreign application upon which it is based, 

14 



has led to the requirement on the part of the 
British Patent Office that the invention protected 
by the British patent shall be the "same" as that of 
the foreign specification. In actual reality, the 
invention need not be the ''same," so long as it is 
narrower than the invention claimed in the Amer- 
ican specification. But suppose the inventor tries 
to secure claims which are broader than the claims 
originally filed in the U. S. Patent Office. It often 
happens that the original U. S. claims are too nar- 
row, or are directed to an aspect of the invention 
which is not of such value as another aspect dis- 
closed subsequent to the filing of the U. S. applica- 
tion. It is permissible, according to the United 
States practice, to broaden the claims after the ap- 
plication has been filed (Walker on Patents, page 
122), and the United States attorney amends the 
claims in this respect in due course if necessary. 
However, on filing the application in Great Britain 
under the Convention with claims corresponding to 
the broader or different aspect of the invention, the 
British examiner objects to them on the ground 
that they claim an invention different from that 
claimed in the U. S. application as originally 
filed. This objection is generally supported by the 
Appeal Officers of the Patent Office, if the specifica- 
tion does not contain any statement of the inven- 
tive idea in such wide terms as to support a con- 
tention that while the claims of the British applica- 
tion were not originally contained in the United 
States application, yet the subject matter of the 
British claims was clearly foreshadowed in the 
original U. S. specification. Experience shows 
that the British examiner will seldom accept the 

IS 



responsibility of allowing claims differing in scope 
or subject from the claims originally filed in the 
United States Patent Office. As a safeguard 
against difficulties of this kind, it might be well to 
file with the United States application a claim of 
the type known as the British omnibus claim, which 
may subsequently be relied upon to prove to the 
British examiner that matter described in, but not 
claimed by, the ordinary American claims, was cov- 
ered by the omnibus claim. Having served its pur- 
pose, the informal omnibus claim may then be can- 
celled out of the American application. 

THE PRACTICE IN FRANCE. 

The difficulties encountered by the American 
specification in France are more problematical and 
rarer than in Great Britain and Germany. So far 
as the Patent Office is concerned, no objections are 
made as to the form or subject-matter of the appli- 
cation. However, the American specification often 
causes trouble even in the placid interior of the 
French Patent Office, owing to the French rule 
curtailing the length of the specification, and of the 
offenders against this rule, fully nine out of ten are 
Americans. It is well known that the French spec- 
ification contains no claims, and that the patent 
is held valid for so much of the invention as is novel 
and patentable. In other words ,the Patent Office 
proceedings are transferred to the Courts, and the 
Courts decide not only the scope of the invention 
but also the question as to whether the alleged 
infringer is within its scope. It is not necessary 
to dwell on the rules of interpretation of the French 
Courts, but let us assume that a typical United 

16 



states specification, without claims, is placed before 
an American attorney, wbo will be requested to state 
what is the part for which protection is desired. He 
would, in the generality of cases, say, ^'I have read 
this through, but what is the invention?" The 
French Courts have to make the same enquiry. The 
typical U. S. specification usually states that the 
invention consists in the novel construction and 
combinations of elements described in the specifi- 
cation and more particularly pointed out in the 
claims. But the American specification generally 
does not point out the "invention," and without the 
claims it is, more often than not, impossible to as- 
certain just wherein the invention lies. Therefore 
it will be realized that French specifications which 
are mere translations of American specifications 
are likely to be misunderstood or construed nar- 
rowly, if the judge cannot tell what is construc- 
tional only and what is the real invention. 

COMPLEX SPECIFICATIONS. 

It may also be said, speaking generally, that 
foreign examiners are much antagonized owing to 
the extremely lengthy specifications filed abroad 
in respect of American inventions, as it takes up 
a great deal of their time in reading matter which 
seems to them to be unnecessary. 

The conception that the specification is addressed 
to the skilled workmen exists in Europe as well as 
in America, but we in America who write specifi- 
cations have no very great opinion of the intelli- 
gence of the skilled workman. It is for more true 
to say of the average American specification that it 
is written for the layman who is unable to read a 

17 



drawing without having every part described. Such 
detailed descriptions are not really necessary in the 
U. S. practice, and could easily be avoided; in 
fact, some of the leading American attorneys are 
now modelling their specifications on the lines of 
English specifications with a great deal of satisfac- 
tion. When complex descriptions form part of a 
British and German application, they annoy the 
examiner by imposing an additional burden of work 
upon him when he is already overworked, and his 
whole attitude is likely to become prejudiced when 
he contracts the voluminous specification prepared 
by the American attorney with the short and suc- 
cinct specification of the foreign attorney. The 
golden rule for the foreign specification is — the 
shorter the better. 

SUMMARY. 

Summarizing, it has been shown that the Amer- 
ican specification is a source of trouble in Europe 
because the function of a specification in Europe is 
to point out the invention itself, in addition to 
describing a practical working embodiment. 

It is submitted that the U. S. attorney can avoid 
the majority of these objections by adopting, at the 
time of preparing specifications for filing in the U. 
S. Patent Offtce, the following simple rules, which, 
it is thought, make not only for an improvement in 
the conditions under which patent applications for 
American inventors are prosecuted abroad, but will 
also be of some assistance in the practice before the 
U. S. Patent Office. 



18 



SUGGESTED MODIFICATIONS OF THE V. S. 
PRACTICE. 

(1) The United States specification should con- 
tain a full statement of the inventive idea or in- 
vention, viewed as distinct and apart from its em- 
bodiment. For instance, in the case of the first ap- 
plication for an automatic breech loading gun, the 
specification might contain a statement to the 
effect that, according to the invention, the force of 
recoil is utilized to load the gun. This statement 
should be broad and quite functional, if possible, 
omitting a reference to any of the elements which 
are employed to carry the invention into practice. 
It is preferable to precede this statement by an- 
other statement as to the problem to which the in- 
vention is directed. Both these statements should 
be contained in the original United States applica- 
tion, and subsequently removed if desired. 

The inclusion of a functional statement such as 
that outlined above may be of assistance to Amer- 
ican attorneys in the United States practice, as the 
preparation of this statement gives an opportunity 
of defining the scope of the invention from the func- 
tional standpoint, and viewed from this standpoint 
the invention often presents aspects which can form 
the basis of important United States claims, and 
which would not be apparent to the attorney in the 
ordinary way. 

(2) The specification should contain as many de- 
scriptions of modifications as possible, subject to 
what follows. Those modifications need not ne- 
cessarily be illustrated. It must be remembered, 
however, so far as the inclusion of descriptions of 
modifications is concerned, that it is bad practice in 

19 



the United States to disclose a valuable modifica- 
tion or species in incomplete terms, but the modifi- 
cations referred to need not be the valuable ones. 
For every preferable way of carrying out an inven- 
tion, there are generally two less practical ways. 
After having given the preferable way, why not 
give the others? Of course, the U. S. Patent Office 
will call for the cancellation of these modifications 
if they are not illustrated, and having served 
their purpose, they may be cancelled. There are of 
course some cases where it would be most inad- 
visable to disclose species as suggested above, and 
in applying this suggestion, the nature of the inven- 
tion itself must be carefully considered. Generally 
speaking, the broader the invention, the safer it is 
to disclose a number of species. 

(3) When the inventor has actually invented a 
number of workable species of a valuable nature, do 
not file separate United States applications for 
them, but include them all in one United States ap- 
plication and divide this application subsequently. 
Under the practice prevailing in all countries with 
the exception of the United States and Canada, a 
number of species can be included in a single appli- 
cation, and in filing under the Convention it sim- 
plifies matters considerably to base the Convention 
applications upon a single United States applica- 
tion. Moreover, in Great Britain, Italy, British 
colonies and some other countries, it is not possible 
to combine a number of United States applications 
in a single application under the Convention. For 
instance, in the case where five species are claimed 
in five U. S. applications, five applications are re- 
quired in the above countries, where one only might 

20 



have been sufficient were this rule observed. There 
is a further important reason for observing this rule. 
In the case where four or five applications upon 
species are filed simultaneously in Germany, one of 
the applications having claims broad enough to 
cover all the species of the other applications, the 
examiner is apt to misunderstand the broad nature 
of this application, seeing that it describes one 
species only, whereas were the five species contained 
in a single application, he could not fail to appre- 
ciate the underlying feature common to them all, 
and would probably grant a broad claim. 

Machine, method and product may also be ad- 
vantageously claimed all together in a single United 
States application for the same reasons as those 
given above. 

(4) File an omnibus claim with the United States 
application. The following is a special form which 
will be found to be particularly suitable : 

"The features of novelty substantially as de- 
scribed and illustrated." 

(5) Make the specification as short as possible. 
European attorneys, for the most part, have dis- 
carded the practice of describing a machine in de- 
tail first, and then its operation. A good specifica- 
tion writer can generally describe not only the 
parts, but also the operation of the parts, at the 
same time, so that no independent description of 
the operation is necessary, and the specification is 
greatly reduced in length. 

The United States patent attorney, by observing 
these rules, will to some extent ensure that his 
specification will receive better treatment when it 
comes before the foreign patent offices and courts, 

21 



and this without prejudice to the home situation. 
It is therefore hoped that these remarks will not 
only lead to a better understanding and realization 
of conditions which are prejudicial to the foreign 
interests of American inventors, but will also re- 
sult in the removal of some of them. 

In the appendix, the specification given on pages 
70-72 of the U. S. Rules of Practice has been re- 
written along the lines indicated above, the amend- 
ments being shown in italics. A criticism of the 
specification, from the European standpoint, is also 
offered. i'^'" 

APPENDIX A. 

The American '^'^type'" specification given in 
THE U. S. Patent Office Rules of Practice^ 
amended in accordance with foregoing rules. 

My invention relates to improvements in meat- 
chopping machines in which vertically reciprocat- 
ing knives operate in conjunction with a rotating 
chopping block ; and the objects of my improvement 
are, first, to provide a continuously lubricated bear- 
ing for the block ; second, to afford facilities for the 
proper adjustment of the knives independently of 
each other in respect to the face of the block; and 
third, to reduce the friction of the reciprocating 
rod which carries the knives. 

In accordance with one feature of my invention, 
I utilize the rotating movement of the block, or of 
parts associated theretoith, to carry luhricating 
medium into the hearing and to distribute it in said 
hearing. Another feature of m,y invention consists 
in providing adjusting devices whereby each knife 
may be adjusted vertically. A further feature of 

22 



my invention consists in the provision of an anti- 
friction device so associated with the reciprocating 
rod carrying the knives that said rod can recipro- 
cate freely and without friction. 

I attain these objects by tlie mechanism illus- 
trated in the accompanying drawing, in which 

Figure 1 is a vertical section of the entire ma- 
chine; Fig. 2 a top view of the machine as it ap- 
pears after the removal of the chopping block and 
knives; Fig. 3, a vertical section of a part of the 
machine on the line 12, Fig. 2, and Fig. 4, a de- 
tailed view in perspective of the reciprocating cross- 
head of its knives. 

Similar letters refer to similar parts throughout 
the several views. 

(The table or plate A, its legs or standards BB,) 
( and the hanger a, secured to the underside of the ) 
( table, constitute the framework of the machine. ) In 
the hanger a turns the shaft D, carrying a fly-wheel 
E, to the hub of which is attached a crank o, and 
the crank-pin p_, connected by link h, to a pin pass- 
ing through a cross-head G, and to the latter is se- 
cured a rod H, having at its upper and cross-head 
G, and to the latter is secured a rod H, having at 
its upper end a cross-head I, carrying the adjustable 
chopping knives d d, referred to hereinafter. 

The cross-head G, reciprocated by the shaft D, is 
provided with anti-friction rollers e e, adapted to 
guides / f, secured to the underside of the table A, 
so that the reciprocation of this crosshead may be 
accompanied with as little friction as possible. 

To the underside of a wooden chopping block J is 
secured an annular rib h, adapted to and bearing 
in an annular groove i in the table A( see Figs. 1 

23 



and 2 ) . TMs annular groove or channel is not of 
the same depth, throughout, but communicates at 
one or more points (two in the present instance) 
with pockets or recepticles j j wider than the groove 
and containing supplies of oil, in contact with 
which the rib h rotates, so that the continuous lu- 
brication of the groove and rib is assured. The rod 
H passes through and is guided by a central stand 
K, secured to the table A, and projecting through 
a central opening in the chopping block without 
being in contact therewith, the upper portion of 
the said stand being contained within a cover k, 
which is secured to the block, and which prevents 
particles of meat from escaping through the central 
opening of the same. 

The cross-head I, previously referred ,to, and 
shown in perspective in Fig. 4, is vertically adjus- 
table on the rod H, and can be retained after ad- 
justment by a set-screw x, the upper end of the rod 
being threaded for the reception of nuts, which re- 
sist the shocks imparted to the cross-head when the 
knives are brought into violent contact with the 
meat or the chopping-block. 

The knives d d are adjustable independently of 
each other, and of the said cross-head, so that the 
coincidence of the cutting-edge of each knife with 
the face of the chopping-block may always be as- 
sured. 

I prefer to carry out this feature of my inven- 
tion in the manner shown in Fig. 4, where it will be 
seen that two screw-rods m m rise vertically from 
the back of each knife and pass through lugs n n on 
the cross-head, each rod being furnished with two 
nuts, one above and the other below the lug through 

24 



which it passes. The most accurate adjustment of 
the knives can be effected by the manipulation of 
these nuts. 

(A circular casing p is secured to the chopping-) 
(block, so as to form on the same a trough P for) 
{ keeping the meat within proper bounds ; and on ) 
( the edge of the annular rib h, secured to the bot- ) 
(tom of the block, are teeth r, for receiving those of) 
(a pinion q, which may be driven by the shaft D) 
(through the medium of any suitable system of) 
(gearing, that shown in the drawing forming no) 
(part of my present invention.) 

(This shaft D may be driven by a belt passing) 
(round the pulley s, or it may be driven by hand) 
(from a shaft W, furnished at one end with a) 
(handle t, and at the other witli a cog^^heel R,) 
( gearing into a pinion on the said shaft D. ) 

(A platform T may be hinged, as at w, to one) 
(edge of the table A, to support a vessel in which) 
(the chopped meat can be deposited. The means) 
(by which it may be supported are shown in full) 
(lines, and the most convenient method of dis-) 
(posing of it when not in use is shown in dotted) 
(lines, in Fig. 1.) 

It will he obvious to those skilled in the art that 
other constructions might he devised without de- 
parting from my invention. For example, the pock- 
ets containing the oil might he located at the sides 
of the hearing groove i, although I prefer to use the 
arrangement hereinhefore descrihed. Again, the 
aforesaid adjustment of the knives might he pro- 
duced hy means of wedging devices in place of the 
nuts c. The anti-friction rollers might he also re- 
placed hy luhricated cylindrical hearing surfaces. 

25 



I prefer, however, to use the construction described 
and illustrated. 

I am aware that prior to my invention, meat chop- 
ping machines have been made with vertically-re- 
ciprocating knives, operating in conjunction with 
rotating chopping-blocks. I therefore do not claim 
such a combination broadly; but I claim: 

1. The combination in a meat-chopping machine, 
of a rotary chopping-block having an annular rib, 
with a table having an annular recess and a pocket 
communicating with the said recess, all substan- 
tially as set forth. 

2. In a meat-chopping machine, the combination 
of a rotary chopping-block with a reciprocating 
cross-head carrying knives, each of which is verti- 
cally adjustable on the said cross-head independent- 
ly of the other, substantially as described. 

3. The knife d, having two screw-rods m m, at- 
tached to its back, substantially as shown, for the 
purpose specified. 

4. The combination, in a meat-chopping machine, 
of the reciprocating rod, carrying the knives, the 
cross-head secured to the said rod, and having anti- 
friction rollers, with guides, adapted to the said 
rollers, all substantially set forth. 

5. The features of novelty suhstantially as de- 
scribed and illustrated. 



26 



THESIZE OFTHE SHEET MUST BE EXACTLY 
10 X 15 INCHES. SEE RULE 5e.r2>. 



I^ia.4^ JC 




£r, JV7. 



-THIS SPAce MU5T BE EIGHT INCHES' 
27 



APPENDIX B. 

Criticism of the U. S. Patent Office "'^type^^ 
specification from the european standpoint. 

(1) The Specification. The bracketed portions 
are superfluous, describing parts whicb. form no 
part of tbe invention, and the operation of which 
can be clearly understood from the drawing. The 
reference letter p is used to indicate two different 
parts. 

(2) The Drawing. The parts are shaded too 
heavily. Fig. 4 is unnecessary. 

(3) Multiplicity of Invention. According to 
British and German practice, three inventions are 
involved. There is no relation between the lubrica- 
tion of the blocks, the adjustment of the knives, 
and the anti-friction bearing for the reciprocating 
rod. Three applications would be required to cover 
these features independently in Germany and Great 
Britain. 

(4) Suhject-matter. It is highly improbable 
that claims 2, 3 and 4 cover patenable subject-mat- 
ter, as the knife adjustment and the anti-friction 
guides are common constructional features in gen- 
eral use in machinery ; it is possible, though doubt- 
ful, that invention might exist in the lubricating de- 
vice for the block, but if a rotating device was used 
prior to the invention for picking up oil in the 
same manner in a different type of machine, then no 
invention will be present. Should this feature be 
novel, however, then it is wrongly claimed; it 
should properly be claimed broadly as a self-lubri- 
cating bearing applicable for use with all classes of 
machinery. 

28 



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